This article delves into the legal intricacies surrounding the comparison of
composite trademarks, focusing on a recent case where the plaintiff, having
proprietary rights in the composite trademark MI SUMEET, filed a suit against
the defendants for their use of the composite trademark NAKODA SUMEET in the
context of mixer, juicer, grinder, and related products. The court's
determination of the similarity between the two composite trademarks and the
application of the essential features principle are crucial aspects discussed in
Background of the Case:
The plaintiff in this case claimed proprietary rights in the composite trademark
MI SUMEET, associated with a range of products, including mixer, grinder,
juicer, hand blender, electrical accessories, and kitchen home appliances since
1993. The plaintiff had also obtained trademark registrations to bolster their
claims. The suit was initiated against the defendants, who were allegedly using
the composite trademark NAKODA SUMEET for similar products.
Principle of Comparing Composite Trademarks:
The court, in its findings, emphasized the necessity to consider the essential
features of the marks under consideration. The essential features principle is a
fundamental aspect of trademark law, requiring a detailed examination of the
core elements that define a mark.
The court noted that the phonetic similarity between "MI SumEEt" and "NAKODA
Summit" was strikingly similar. Phonetic similarity is a critical factor in
determining deceptive or misleading similarities between marks. The phonetic
structure, which assesses how rival marks sound, played a pivotal role in
establishing the overall impact of phonetic use, indicating a high degree of
Visual and Structural Similarity:
In addition to phonetic analysis, the court considered visual and structural
similarities between the two composite trademarks. It was observed that the two
marks were not only phonetically similar but also shared visual and structural
commonalities. The overall get-up of the two words was deemed so structurally
similar that it raised concerns about the likelihood of deception.
Lack of Bona Fide Explanation:
The court highlighted the absence of a bona fide and logical explanation from
the defendants for adopting a mark so similar to the plaintiff's. This lack of a
reasonable explanation further strengthened the plaintiff's case, contributing
to the court's decision in favor of the plaintiff.
The concluding Note:
The comparative analysis of composite trademarks, as demonstrated in the MI
SUMEET vs. NAKODA SUMEET case, underscores the importance of considering
essential features, particularly phonetic, visual, and structural elements.
Courts must weigh these factors comprehensively to ascertain the likelihood of
deception or confusion. Additionally, the absence of a bona fide explanation for
adopting a similar mark may tip the scales in favor of the party alleging
The Case Law Discussed:
Case Title: Dilip Kumar Jain Vs Vikas D. Jain
Date of Judgement/Order:18.01.2024
Case No. CS 40 of 2020
Neutral Citation: N.A.
Name of Hon'ble Court: Calcutta High Court
Name of Hon'ble Judge: Krishna Rao, H.J.
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539